Updated Interface Features and Bulk Search


TM TKO has made a number of updates and improvements to to our user interface over recents weeks, and we thought a summary blog post was warranted to summarize all the changes!

Tracking improvements

Across all searches, we’ve added a “Docket Number” field. You can also find this in your History window, making it easy to keep track of — and get back to — prior projects.

Search tagging and commenting

In all searches, we have made a number of improvements to make it easier to tag and comment on results. The first column of your results now has more going on than it used to. The first row has a number and a pair of arrows; these let you move around in the report and control its functions. The second row has expanded tagging functionality and a new notes feature.

The number in the upper-left is now an active link. Click on it, and we’ll bounce you up to the scatterplot to see where this application or registration record is located.

The paired arrows in the upper right will compress the contents of that row to a single line, or expand it again. It’s useful for shortening up lengthy descriptions of goods and services.

The tagging star is not new, but some of its functionality is. When you click on the star, it won’t immediately turn blue like it used to. Instead, you’ll get a popup with several color options: red, yellow, green, blue, and clear. This will let you prioritize and re-sort results how you want them, both inside the platform and in exports. (More on the export side shortly.) All of your old searches with blue stars will still appear blue, but you can edit those to use the new colors.

After you pick a star, you can double-click to apply that same star color to any other rows. Pick a new color from the color selector, and double-clicking will apply that new color.

The little pencil-writing-on-paper icon in the lower right allows you to add and edit notes on a per-record basis. Click on one, and you’ll get an interstitial pop-up to add your comments: comments about the risk analysis, a link to the mark in use, or etc. In the platform, you can read the comment by clicking on the icon — you’ll see a darker icon for any rows that have user comments.

Where the comments show up in exports varies a bit. For Word and PDF exports, they show up in a row immediately below the commented-upon record. Some comments can be pretty long, and this makes sure your insights won’t be squashed into a tiny little column. For CSV exports, they’ll be the furthest-right column, but on the same row.

Search report spacing and review

The small “paired arrows” in the bottom right show up in several places in the interface. They do the same thing: give you a “compressed” view of results. If you click on it on a single line, it’ll shorten that up to just the core details. You might use it to, say, skim over a 44(e) registration with a list of goods that goes on and on and on and on. Here’s what a shortened row looks like:

If you click the two-arrow icon on the top of a search or a section of a search, it’ll single-line all records. It’s just like the per-row expander, but applied to the whole section of the report. If you click the four-arrow expander icon, for either the whole report or just a section, the rows will expand to the full width of your window with no whitespace buffer.

Search export

The export buttons have moved from specific sections to a unified export button at the top right of the page, as shown below.

When you click on an export type, you’ll get a much more detailed set of options than before. You now have more optionality about both what results to include by section (all, only tagged, or none) and about the order they will appear (sorting by relevance or tags). If you sort by tags, you’ll get results in order, with red first then yellow, green, blue, and clear (untagged). This should allow you to get your charts ordered exactly how you want them with less effort.

At the bottom, you’ll see some extra checkboxes — you can choose whether to include static images of the scatterplot and bar graphs (previously available in PDF and now available in Word, too), and whether to include item-specific notes.

Bulk Search

Users with heavy clearance needs have requested a way to enter bulk searches. For example, clothing brands may need to clear hundreds of names for a new seasons’ catalog, or pharma brands may need to get a long list of candidate names to submit for regulatory approval. We have just added a feature to facilitate these clearances.

The new Bulk Order page under Knockout is where you can take advantage of this new convenience. It’s simple to order multiple searches for different marks using the same goods, whether word marks or designs, and you can even input names via spreadsheet. Bulk searches are no less thorough than a normal search, and you can go into each search report individually. To facilitate quick review, bulk orders also have a convenient preview page that summarizes all the results. It provides you a quick risk assessment (using the red/yellow/green stars; these are user-editable so you can customize the assessment) and a short preview of the top handful of results. It’s a huge time saver! To reflect the additional computational impact of turning around large numbers of results quickly, bulk orders have a $5 fee per marked searched.

Thanks!

Your feedback and suggestions are really important to TM TKO — they help inform how and when we make updates to our services. We hope that you will enjoy these upgrades, and keep the suggestions coming!

Trends in 2(c) refusals

For today’s blog post, we’ll take a look at 2(c) refusals. Section 2(c) of the Lanham Act provides that registration should be barred where a mark:

Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

Looking at just US-based applicants, 2(c) refusals apply in about 2% of outgoing Office Actions. Still, given the large numbers of applications in 2021, that’s almost 4,000 2(c) refusals to date. Roughly 100 of those are for Presidentially-related marks, in a roughly even mix of Biden-Harris-related and Trump-related filings, and a smattering of Obama-related ones still percolating around from the especially stubborn. As a group, these have to be some of the lowest-quality applications that the USPTO has to slog through. Most of these arguably don’t function as marks anyway and/or would get refused on “failure to function” grounds or under 2(a) anyway, even if 2(c) was not a part of the statute.

That still leaves us with quite a number of 2(c) refusals. We reviewed all of them, and roughly 70% are “traditional” sorts of 2(c) refusals — the actual name of or a mark incorporating the actual name of a person (BROCK LESNAR or GLORIA SERVICES or GILLIE CHESTER’S NASHVILLE HOT!), or their name-like pseudonym or nickname (ZØ MARIE or STEWIE). A few are a bit further afield from being name-like, like PRINCE OF BLUE or ALKALINE VEGGIE MOMMIE. (Occasionally, the Examiners have to be careful about their phrasing to avoid theological discussions about whether 2(c) should apply to IAMGAWD, a DJ.) Refusals based on the picture element alone are pretty uncommon, but do happen occasionally, especially for more lifelike portraits where a face is more clearly identifiable, as in this application for LATINX POP LAB, where the Examiner did a Google search for the applicant, noted the likeness, and asked for a consent statement.

Drawing: 90153883

Plenty of marks generate 2(c) inquiries where the Examiner just can’t tell, like TALDE, or that sound name-like but the applicant says do not identify a specific living individual, like LINGLEE.

Class 41 entertainment-related content (live events, etc.) and associated goods like musical recordings, etc. are far more represented in 2(c) refusals than the general application pool. Over one quarter of 2(c) refusals are in Class 41.

If you ever need to research 2(c) refusals or effective responses, you can use TM TKO’s Office Action research to dive deep into the issue, and find effective responses on similar facts, or that have convinced your Examiner, or both!

Chinese filers and the US counsel rule

The USPTO’s recent show cause order to Chinese IP firm Shenzhen Huanyee Intellectual Property Co., Ltd., about its alleged unauthorized practice of law in the US in over 8,000 applications and widespread use of false information in those applications. The Office may invalidate all such applications.

The USPTO has issued these in other situations, like this 2018 order to USAEU Intellectual Property Agency Co. Ltd. (over 2,500 applications) and a prior round of 2016 enforcement. Prior rounds of enforcement did not invalidate the applications or resulting registrations, so the Office is definitely being more aggressive this time. A list of enforcement actions — lots of which are against Chinese representatives — is available here.

TM TKO did some research on some of the most common Chinese email providers (qq.com, 126.com, 163.com, sina.com, 139.com, sohu.com, and foxmail.com) and how frequently email addresses from those providers are used as the correspondent of record in USPTO trademark filings. It’s a lot! A surprisingly large number of these just flatly list a firm with a Chinese address as correspondent — at least 50%. This isn’t necessarily problematic — a US-licensed attorney could be practicing there — but I wouldn’t be shocked to find future unauthorized practice actions against some counsel of record in this data set.

2021: 23,500+

2020: 49,000+

2019: 22,300+

2018: 22,200+

2017: 22,900+

2016: 14,600+

The number of applicants listing a US address and using a typically-Chinese email address is pretty high. Again, it’s not impossible that this happens, but I’d be shocked if a decent percentage of these (a) don’t have a common “address” and (b) wouldn’t be of some interest to the PTO’s disciplinary czars.

2021: 540+

2020: 1800+

2019: 640+

We’ll be monitoring additional USPTO enforcement actions to see if this aggressive enforcement comes to pass (especially invalidating applications) turns into a continuing priority, or is more of a sporadic twitch of their enforcement muscles.

Letters of Protest – Interesting Initial Findings

We’re now starting to index Letter of Protest decisions — the “Letter of Protest Memorandum” responses. These are classified as “Administrative Response (ADR)” as a “Document Type,” under “Office Action Criteria” in manual Search. Occasionally, a Letter of Protest itself makes it into the file for some reason — these are flagged as “Letter of Protest” or “LOP.”

This blog post takes an initial look at some of the more interesting trends that we noticed from some initial research.

A. The Vast Majority are 2(d)-related.

Unsurprisingly, most Letters of Protest decisions (and thus most Letters of Protest) are attempts to keep third-party applications for arguably similar marks. These accounted for 95%+ of the currently-flagged Protest-related content. Of those that had ADR or LOP flags, only about 12% made it through to registration, suggesting that Letters of Protest are extremely effective tools in proactively protecting clients’ trademarks.

B. The Red Cross is Super Active

The Red Cross seems to be filing a bunch of Letters of Protest relating to use of the cross or “plus” designs.

Sometimes, they just point out that the design element might be a “Swiss flag,” e.g. a black and white logo for healthcare cost tracking and insurance apps (abandoned) and a mark for IMMUNITYAID (with the white cross in the red “D”) for dietary supplements (registered; no refusal issued).

In others, they more expressly make a 2(a) claim based on the Red Cross mark. These are often but not always medical related, e.g. compare a G+ mark for surgical equipment (published for opposition) and POWER PLUS for motor oil (still pending, 2(d) refusal unrelated to the Red Cross). Sometimes these do result in 2(d) refusals, like a dove+red cross design for healthcare services (abandoned), or 2(a) refusals, like THRIVE HYDRATION & design (cross in the “t”) for vitamin injection services.

C. Specimen Protests Haven’t Been Especially Common

While most Letters of Protest related to 2(d) refusals, there were a few specimen ones! A number resulted in digitally-altered image refusals, and applications so refused usually went abandoned. Not always, though; some applicants just swapped in a substitute specimen and made it through to registration.

We’ll pay attention to these as the data pool expands. In the meantime, enjoy the new research opportunities!

Assessing a 2(d) Refusal – UNQUESTIONABLY GOOD for hard seltzer

We like to take a look at interesting 2(d) refusals. They present interesting fact patterns, and they can help us show you how to make the best use of some of TM TKO’s tools.

Today’s Refusal

Today, we are looking at an application filed by Anheuser-Busch for the mark UNQUESTIONABLY GOOD for hard seltzer. It ran into a 2(d) refusal based on a registration for the mark UNQUESTIONABLY ORIGINAL, disclaiming “original,” for beer and beer garden services, owned by District 9 Brewing Company.

The Prosecution History thus far

A-B got an initial refusal in September, filed one round of arguments in March, and got a final refusal on April 7, 2021.

Differences Between the Marks?

A-B argued at length that UNQUESTIONABLY is laudatory, and supports the second words in each mark — and that GOOD and ORIGINAL are quite different. Even though our knockout algorithms emphasize UNQUESTIONABLY quite a lot as a part of the mark, and score UNQUESTIONABLY ORIGINAL as one of the top couple of results, I’m actually very sympathetic to this argument. Because of the differences between the marks, I agree with A-B the consumers wouldn’t confuse the two marks.

The UNQUESTIONABLY ORIGINAL mark is a slogan used by the registrant — a secondary mark paired with its D9 Brewing house mark.

A-B’s real-world use of the mark is also secondary, although not as clear-cut. A-B is using the mark in plain text on their website, e.g. “…, and is filtered five times for an unquestionably good taste.” That’s not even a trademark use, but might cause problems under 2(e)(1) or “failure to function” grounds during specimen examination. The company is also using it with a video series called a “Flavor Journal,” where the “Thirsty Bartenders” vloggers and a guest come up with “Unquestionably Good” food/beverage pairings using Bud Light Seltzer. That’s probably not going to cut it as a specimen of use with the USPTO either.

Nevertheless, it seems to support the idea that neither mark is “primary” on the minds of customers — those are the BUD LIGHT and D9 BREWING marks, or possibly a secondary, beer-specific mark on the D9 side. Alas, the USPTO doesn’t consider this — perhaps examination outcomes would be more consistent and more closely matched with reality if the Office could consider the real-world centrality (or lack thereof) of a mark in its commercial context in the context of considering 2(d) refusals. It makes sense why it doesn’t — a registrant could claim secondary use in prosecution and later expand it — but it still seems like something can be done to improve results.

We took a quick look, via ThorCheck’s Term Coexistence search, at otherwise similar marks that differ in this way — one has ORIGINAL, the other GOOD. There were slim pickings in the beverage classes — SINFULLY GOOD SPIRITS! vs. ORIGINAL SIN was the best we found. Term coexistence examples like this are always a bit chance-based, since two companies have to happen to pick names that differ in exactly this way.

Differences Between the Goods?

A-B is pushing uphill here — the Examining Attorney emphasized evidence that various products use the same mark for both beer and hard seltzer, including A-B’s own Bud Light brand, Michelob Ultra, Corona, and more. Perhaps because of this, A-B did not contest the relationships of the goods in the first Office Action Response. Perhaps, also, A-B did not wish to go on record arguing that two products are not closely related — it wouldn’t want to have that quoted back to it during a later enforcement effort.

We used ThorCheck to do a comparison between “beer” and “hard seltzer.” While there are certainly examples of the same companies providing both under the same or similar marks (more on that shortly), there are also a lot of examples of similar marks co-existing.

OwnerGoodsMarkMarkGoodsOwner
Summit Brewing Company032 beerSUMMIT BREWING COMPANY
Disclaims: “BREWING COMPANY”
Reg: 3061467
Serial: 76383607
Registered And Renewed
Reg: 02/28/2006
Filed: 03/13/2002
SUMMIT SELTZER
Disclaims: “SELTZER”
Reg: 6206853
Serial: 88576621
Registered
Reg: 11/24/2020
Filed: 08/13/2019
033 hard seltzerSummit Seltzer Company LLC
DC BRAU BREWING LLC032 beerTHE CITIZEN
Reg: 4169260
Serial: 85374727
Section 8 & 15 – Accepted And Acknowledged
Reg: 07/03/2012
Filed: 07/19/2011
CITIZEN SELTZER
Disclaims: “SELTZER”
Reg: 6171247
Serial: 88730364
Registered
Reg: 10/06/2020
Filed: 12/17/2019
033 hard seltzerCitizen Cider, LLC
Mad Scientists Brewing Partners LLC032 beerEXPRESS
Reg: 3990176
Serial: 85209319
Section 8 & 15 – Accepted And Acknowledged
Reg: 07/05/2011
Filed: 01/03/2011
TROPICAL EXPRESS
Disclaims: “TROPICAL”
Reg: 6310176
Serial: 88753462
Registered
Reg: 03/30/2021
Filed: 01/09/2020
033 hard seltzerDraught Works, LLC
Vino.com, LLC032 aleNECTAR ALES
Disclaims: “ALES”
Reg: 4295409
Serial: 85664805
Section 8 & 15 – Accepted And Acknowledged
Reg: 02/26/2013
Filed: 06/28/2012
NECTAR
Reg: 6218762
Serial: 88785906
Supplemental Reg.
Registered
Reg: 12/08/2020
Filed: 02/05/2020
033 hard seltzerDivinely Nectar, Inc.
Belliveau, Justin R.032 beerGRID CITY BEER WORKS
Disclaims: “BEER WORKS”
Reg: 6257431
Serial: 87300104
Registered
Reg: 01/26/2021
Filed: 01/13/2017
GRID CITY BUBBLE WORKS
Disclaims: “WORKS”
Reg: 6171375
Serial: 88785058
Registered
Reg: 10/06/2020
Filed: 02/04/2020
033 hard seltzerGrid City Beer Works
Caldera Brewing Company032 aleASHLAND AMBER
Disclaims: “AMBER”
Reg: 3844351
Serial: 77897387
2(f) claim
Registered And Renewed
Reg: 09/07/2010
Filed: 12/18/2009
ASHLAND HARD SELTZER
Disclaims: “HARD SELTZER”
Reg: 6263853
Serial: 88642477
Registered
Reg: 02/09/2021
Filed: 10/04/2019
033 hard seltzerAshland Beverages, LLC
East Nashville Beer Works, LLC032 beerEAST NASHVILLE BEER WORKS
Disclaims: “BEER WORKS”
Reg: 5070316
Serial: 86764667
Supplemental Reg.
Registered
Reg: 10/25/2016
Filed: 09/22/2015
NASHVILLE SELTZER
Disclaims: “SELTZER”
Reg: 5958107
Serial: 88573835
Supplemental Reg.
Registered
Reg: 01/07/2020
Filed: 08/09/2019
033 hard seltzerTaylor, Kent C.
Sideways Brewing Company, LLC032 beerSIDEWAYS FARM & BREWERY
Disclaims: “FARM & BREWERY”
Reg: 5885805
Serial: 87385887
Registered
Reg: 10/15/2019
Filed: 03/26/2017
#GET SIDEWAYS
Reg: 6135704
Serial: 88787476
Registered
Reg: 08/25/2020
Filed: 02/06/2020
033 hard seltzerIslamorada Distilling LLC
The Denver Beer Company, LLC032 beerMAUI EXPRESS
Reg: 5260511
Serial: 87290760
Registered
Reg: 08/08/2017
Filed: 01/05/2017
MAUI HARD SELTZER
Disclaims: “HARD SELTZER”
Reg: 6044346
Serial: 88681927
Supplemental Reg.
Registered
Reg: 04/28/2020
Filed: 11/06/2019
033 hard seltzerKahu ‘Ohani Inc.

We also took a quick look at overlap — where the same company used the same mark for both beer and hard seltzer, just to assess the strength of the argument. Large brewers make up a lot of the results – A-B has several marks (BUD LIGHT, NATURAL LIGHT, ALOHA BEACHES), ; several smaller brewers also have registrations for both, like Great Divide (WHITEWATER), Craft Brew Alliance (OMISSION), Spruce Street (TWO ROBBERS), Detroit Rivertown (ATWATER), Montauk Bewing (MOUNTAUK). Interestingly, Kahu ‘Ohnana, mentioned above, owns registrations for MAUI BREWING CO. and MAUI HARD SELTZER that co-exist with the MAUI EXPRESS registration noted above.

We also took a look at prosecution histories to attempt to find filings for “hard seltzer” that overcame prior registrations for “beer.” Here is the search to do so, for TM TKO users. This yields a few good examples, including the aforementioned ASHLAND HARD SELTZER vs. ASHLAND AMBER (arguments, including statistically-driven arguments that most beer makers do not make hard seltzer and vice versa*). Also, the search finds some really interesting non-refusals: an A-B registration for SOCIAL CLUB did not receive a citation to some prior registrations for SOCIAL for goods including beer, notwithstanding a Letter of Protest seeking as much. SPYK’D (for hard seltzer) “ran into” a similar non-issued Office Action vs. SPIKE (for beer and booze) — a Letter of Protest was accepted but didn’t generate refusal.

* ThorCheck helps with this type of argument — its charts show that there are over 18,000 active, use-based registrations for beer vs. under 200 for hard seltzer, and only ~10 show overlap in production. Unsurprisingly, the Ashland arguments focused on the percentage of beer producers vs. the percentage of cider producers!

Springtime: Flowers, Trees, and Trademarks

It’s a beautiful spring so far, and we’re all enjoying the pretty blossoms and the pollen-driven sneezes that go along with getting outdoors. To honor the return of all the grasses, trees, and other plants in our lives, we’re taking a closer look at how trademarks interact with these products.

Trademarks for Plants

Can you get a trademark for a brand that you will use with plants? Of course! Recent registrations for apple trees include marks like SERUI, CRIMSON SNOW, APIFRUIT, COSMIC CRISP, SUBLIME ORGANICS, BUD 10, KIKU, RED ROMANCE, and many more.

Varietal and Cultivar Names

There is a big exception — the “varietal” or “cultivar” names of a cultivated variety of subspecies of a plant or seed. The Office considers these to be the equivalent of the “generic” name for the plant or seed, regardless of whether the name is a fanciful name or a code. TMEP § 1202.12. The varietal or cultivar name is used in a plant patent as the identifier for the variety of plant or seed, and remains so regardless of whether the patent expires. In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006).

Examination of Varietal and Cultivar Names

The Office starts by checking the registry of names under the Plant Variety Protection Act. The TMEP lists http://www.ars-grin.gov/npgs/searchgrin.html as the URL, but the Germplasm Resources Information Network (“GRIN”) database has apparently been updated to https://www.ars-grin.gov/PVP/Search. Dictionary evidence and more can also be relevant, as is WIPO’s fantastic PLUTO Plant Variety Database https://www3.wipo.int/pluto/user/en/index.jsp.

Some of these plant varietals are simply alphanumeric codes; it’s unusual for a company to ever attempt to protect these as a trademark. For example:

PVP Application Summary: 200000290

Application StatusCertificate Issued
Status Date5/2/2002
ApplicantMonsanto Technology, LLC
Cultivar (Variety) Name22DHQ3
Experimental NameNA
Common NameCORN
Scientific NameZea mays L.
Certified Seed?No
GRIN-Global AvailabilityNot Available
Full Certificate PDF

More arbitrary names are another matter altogether. Companies often pick a name for the new product without taking trademark concerns into account, and attempt to protect the cultivar name as a trademark. This never goes well.

The Office views these as incapable of functioning as a trademark – the equivalent of an insurmountable genericness refusal. No amount of advertising expenditure can salvage it as a mark. See, e.g., In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963). It doesn’t even matter if the varietal name was never actually used — it’s sufficient that it was registered as a varietal name. In re American Onion Int’l, Inc., Ser. No. 76660662, p. 5 (TTAB Aug. 8, 2008), available at https://ttabvue.uspto.gov/ttabvue/v?pno=76660662&pty=EXA&eno=13. However, if a term is a variety name for one type of plant (like a dianthus) it won’t bar registration of that term for a different plant (like an apple tree), at least if the applicant makes that clear in their description of goods. See, e.g., the registration for RED ROMANCE, Reg. No. 5493245.

The University of Minnesota, which developed the varietal, attempted to register HONEYCRISP for “apple trees, namely variety Minnesota 1711 R.” Ser. No. 74156209. The Office’s online records are spotty in the early 1990s, and the full file history is not online, but it went abandoned due to a failure to respond to an Office Action — we can confidently assume that it foundered on the plant varietal refusal. In other applications, the Office also found the term descriptive or generic as applied to related goods, like cider.

Plant varietal refusals don’t often make it to the TTAB. But, a prominent recent example saw Rainier Fruit Company’s attempt to register a lightly stylized version of HONEYCRISP for apples. Rainier didn’t even try to argue the cultivar issue — it disclaimed HONEYCRISP — but the stylization was not sufficiently distinctive.

In re Rainier Fruit Co., Ser. No. 86108344 (TTAB Sep. 29, 2015), available at https://ttabvue.uspto.gov/ttabvue/v?pno=86108344&pty=EXA&eno=10.

What’s getting through? Marks that pair HONEYCRISP with an additional, (more) distinctive elements. The two currently active registrations are a Supplemental Registration for PREMIER HONEYCRISP, with HONEYCRISP disclaimed, for “live honeycrisp apple trees,” and a Principal Register registration for ROYAL RED HONEYCRISP for “live apple trees.”

Takeaways for Trademark Lawyers

Please make sure your clients plan for trademark protection before filing for a plant varietal production certificate and plant patents. If trademark and patent counsel are not on the same page, using the cultivar name in the PVP certificate will be fatal to attempts to claim trademark rights in that term.

Results of the TM TKO 2021 Trademark Practice Economic Survey

For the past two weeks, TM TKO ran a survey about how trademark professionals are feeling about their practice in 2021. We’ll summarize the results in this blog post. Thanks to our users and to participants on Oppendhal Patent Law Firm’s e-trademarks listserv for their responses!

About TM TKO

A very quick word about us – TM TKO has been providing daily or subscription-based access to a variety of trademark research tools since 2015. Our customers include AmLaw 100 firms, trademark boutiques, solo practitioners, government agencies, in-house counsel, and more. We had our best year ever as a company in 2020, even if the year posed its challenges to us all as humans, and are looking forward to 2021. Our data covers the US, CA, MX, AU, NZ, EU, FR, DE, ES, the UK, and WIPO.

We aim to help trademark lawyers with three main pillars of all successful trademark practices: solving everyday problems, solving hard problems, and growing practices.

Everyday problems: our clearance, search, and watch tools help you with your day-to-day practice needs. Hard problems: specialized research tools like trademark Examiner analytics, automated and manual Office Action research, and comparative research via ThorCheck® can help overcome difficult prosecution refusals. Growing your practice: we have an expanding set of marketing solutions to help grow your client base and generate more projects for existing clients.

Haven’t used TM TKO yet? It’s free to try for 30 days.

To the Results!

Trademark Practice – Size and Geography

Our respondents were almost evenly split between solo and 2-5 lawyer IP practices, with about 20% in larger groups.

About 40% of respondents were from the east coast, 15% from the south, and the rest almost evenly split between the west and southwest. All but a couple of respondents were American lawyers. Of those, about 50% were in large cities, with the rest evenly divided between small and medium size cities.

Expectations for 2021

Two-thirds of attorneys are looking forward to 2021 being better than 2020, with most of the rest expecting a similar year. Unsurprisingly, given what a mess 2020 was in the real world, not too many expect the rest of 2021 to be worse than 2020!

Most respondents were neutral or optimistic about their personal practices, and most saw the greatest growth in small and midsize clients versus large companies. Large company work was the fastest-shrinking, among respondents.

Litigation and international prosecution slowed down the most; domestic prosecution and non-litigated dispute work were the most consistent growth areas. Transactional work and international prosecution work had about the same numbers of respondents who saw growth incoming and shrinkage, so there was no clear trend of those practice areas.

About two-thirds of respondents are seeing most of their new work come from existing clients, with referrals from in-country clients, business development efforts, and referrals from foreign counsel each attracting about half-as-many respondents as the new-work-source before it.

Remote work and professional growth in a post-Covid world.

About 40% think that the future will see more remote work than in the past, and another 20% expect continued remote work. Others didn’t move to a remote model anyway, it would be a temporary issue, or aren’t sure how this will play out. Of those expecting more remote work, around 30% was because employees prefer it, about 10% because management does, and about 14% see cost savings on office space as a benefit.

Almost two-thirds or respondents attend INTA in normal years, with other conferences or state bar meetings each racking up over 20% of respondents. Only about 40% plan to attend INTA this year, a pretty good drop; “other” events saw some growth (online CLEs?), and state bar meeting attendance rates seem likely to stay pretty constant. Perhaps it makes some sense that people are currently leery about attending highly international conferences in a world where vaccine distribution is far from equal; this may change as the year moves along and (hopefully) that situation changes.

Practice challenges in 2021

Perennial favorites like staffing issues, client acquisition, the cost structure of a process (and commoditization of it, on the flip side), and price pressures all received at least 20% of responses. Client retention and technology were, comparatively, minor worries.

Technology

Search, watch, and docketing were pretty ubiquitous, with IP investigative services at around 40% of respondents. Anti-piracy/counterfeiting services (2%) and trademark renewal services (2%) were far less frequently used by our respondents. Most practitioners kept their technology services pretty constant in 2020, and plan to do so in 2021 too.

Practice and the USPTO

About half of respondents replied that the USPTO hasn’t improved anything in the last several years, with occasional plaudits for website usability, 2(d) prosecution decisions, and TTAB decisions. Almost half of respondents think that 2(d) refusal decisions have gotten worse, and about a third found degradation in 2(e) refusals and other prosecution decisions. The TTAB was the least-listed, although whether that reflects on the merits of the Board’s decisions or just the fact that most practitioners don’t directly interact with the Board on a regular basis is beyond the scope of the survey.

Other comments

Our free-text comments focused on several common threads:

– unhappiness with the USPTO, both with its technology and the rate and thought processes behind 2(d) refusals
– dissatisfaction with the number of registrations that get through with iffy-to-fake specimens, and the greater amount of pushback that practitioners feel they are getting for specimens that have historically been acceptable.

Failing to Function – a Short Defense of a Frustratingly Vague Refusal

The USPTO has dramatically increased its use of the “failure to function” refusal in recent years. Total “failure to function” refusals jumped from under 400 in 2001 to under 1,300 in 2010 to over 3,600 in 2020.

We took a look at marks that have at least two words with a filing date September 1, 2019 and March 1, 2020 and got a failure to function refusal. Overall, the failure to function refusal is “holding up” with frequently. Overall, 75% of applications that received a failure to function refusal and have a “final” decision (abandoned / registered) went abandoned. Represented applicants did relatively better, but still only had a 32% registration rate vs. a woeful 15% for unrepresented applicants. Class 25 applicants fared especially badly, with only 12% getting through to registration. Lots of these marks had a “bumper sticker saying on a t-shirt” aire about them — applications for marks like GOD IS THE DESIGNER, MY 1ST CHRISTMAS, FAMILY DINNER SURVIVOR, STOP THE SPREAD, and DON’T TALK TO ME all foundered on the rocks of the failure to function refusal.

The failure to function refusal can be frustrating for applicants and their counsel, because it’s one of the least “defined” (either statutarily or via the TMEP). It’s never a good sign when the “statutory support” is as ill-defined as “Section 1, 2 and 45,” as is the failure to function refusal! The Trademark Office could help reduce this anxiety by better clarifying the line between an “informational message” or an “expressive statement” that doesn’t function as a source indicator vs. a slogan that does.

Nevertheless, it is clear that the failure to function refusal is serving an important purpose. It’s clearly keeping a lot of “marks” that are primarily informative or expressive rather than source-indicating off the trademark registry. In the long run, that’s a good thing, since it provides more room for the rest of society to engage in expressive speech without running into trademark claims.

Application Pendency and the USPTO

The USPTO’s trademark dashboard has a variety of pendency tracking. Despite a deluge of applications, the Office has kept up, by its own metrics: new applications are largely getting examined in the usual ~3 months from filing.

However, our Office Action Analysis tool data suggests that a lot of applications that are running into 2(d) and other substantive refusals are taking longer than usual to come to a final resolution. So, we did a breakdown on application pendency time. There isn’t the time to do a totally comprehensive survey; instead, we looked at how many applications got Office Actions with 2(d) refusals in January of 2020, 2019, 2018, 2017, and 2019 to see how many went abandoned, and how quickly those that went through to publication did so.

2(d) Refusal Rates Over Time

About 20% of all applications got 2(d) refusals in each year. There were no significant changes. Obviously, with the uptick in total filings (roughly double 2009 levels), the total number of refusals is much higher.

The rates at which refused applications went abandoned without ever being published has been pretty steady over time, hovering between 50 – 55%.

Applications with minor issues

When the applicant resolves a 2(d) refusal, how quickly can they do so? In 2009, 29% of refused applications had made it through to publication within ~12 months, 37% by ~18 months, and most of the rest by 24 months. For more recent applications, it’s a very different picture. Applications overcoming a 2(d) refusal within 12 months has dropped to 21-22%, and publication rates within 2 years are down to around 33% of applications. It’s just taking longer to get to similar results.

Why is this? My guess is that the huge application volumes result in a larger registry, and more applications are getting held up on prior pending applications. So, it’s just taking longer to resolve refusals than ever before.

The raw data:

YearStatus% of Refusals
2020Pub in 1 year22%
Pub in 1.5 yearsna
Pub in 2 yearsna
Pending40%
2019Pub in 1 year22%
Pub in 1.5 years28%
Pub in 2 years34%
Pending7%
2018Pub in 1 year21%
Pub in 1.5 years29%
Pub in 2 years33%
Pending3%
2017Pub in 1 year22%
Pub in 1.5 years37%
Pub in 2 years50%
Pending0%

Have a great weekend, and a fantastic MLK Day holiday on Monday!

Internationalizing a Trademark Watch Portfolio in TM TKO

With TM TKO’s jurisdictional expansion, you’ll want to make sure that you are taking advantage of the ten new countries (CA, MX, EUIPO, FR, DE, ES, UK, AU, NZ, and WIPO) to protect your clients with watching. 

I. Creating International-Focused Watches based on a US Portfolio

Many practices have a bunch of US clients that are mainly active in the US, and some clients with more international business. Let’s walk through setting up a more selective portfolio to focus on these multinational clients.

Let’s pick a company as an example — we will use DomainTools. [We don’t represent or provide services to them or their counsel; this is purely an example. The same is true for all examples provided below.] A quick search indicates that its marks as held by Domain Tools Holdings, LLC (US and AU) and Domain Tools Holdings, SARL (EU). The goods and services covered in each are pretty similar.

Go to Portfolio and set up a new Attorney Portfolio — Attorney Portfolios drive watches, while Firm Portfolios are focused on conflict checks. Let’s give it a descriptive name – DomainTools international watch portfolio – keep the US as the “home” jurisdiction, and apply the watches in all ten jurisdictions. The “home” jurisdiction is important — DomainTools has registrations elsewhere, but we only need one “home” since their portfolio consists of the same mark protected in multiple places. If we had set up all countries as “home,” we’d have multiple overlapping watches for basically the same thing — the US, EU, and AU registrations cover basically the same classes and goods/services — and you would have to needlessly wade through extra results.

You’d only want to select multiple “home” jurisdictions if your clients had multiple key marks in different countries, e.g. a consumer products company with localized brands. Even there, you may want a more targeted search to avoid too much overlap. Your setup page will look like this:

If you want to “internationalize” only a single watch or a handful of watches in an existing portfolio, just go to the Watch tab then Manage, select the watch you want to expand internationally, and click Edit. Change the Jurisdiction selector to add whatever additional jurisdictions you want.

II. Setting Up Watches For Practices Outside the US

Let’s say you are a lawyer based outside of the US, and need to set up both domestic and international watching. The international part will be the same as we describe in part (I) of this blog post, above.

The domestic side can be a little more complex than in the US, where we can use correspondent email addresses to quickly set up a portfolio. The only international jurisdiction where any email addresses are in public data is Mexico, and even there it’s not complete.

We suggest using either attorney name or firm name firm name. Some jurisdictions have both, like Canada, but even there it’s not consistent — attorneys must enter their information in a particular way to get both covered. If your jurisdiction doesn’t allow you to limit by attorney name — and you are operating in a multi-lawyer practice group that doesn’t have shared clients — you may have to pair firm name + client names (add a group of Owner fields, separated by a Boolean OR) to focus on just your portfolio. 

As above, the firm / companies are used purely for example purposes.

Another way to do set up a watch portfolio would be to limit the watching to just domestic clients, as in the example below for a Canadian law firm.

III. Need a Hand?

Don’t hesitate to set up a time to talk if you need a hand! Just use the “schedule a consultation” link at the bottom of any page in TM TKO (after logging in), and we’ll be happy to assist and make sure you get the most out of this new international watching resource.

TM TKO Adds 10 New Trademark Jurisdictions

TM TKO is happy to announce that we have launched 10 new jurisdictions in our trademark clearance, watching, and prosecution research platform, more than doubling the number of searchable trademark records in TM TKO. TM TKO now covers the primary trademark filing jurisdictions for nearly 1 billion people worldwide, and provides partial coverage for nearly 100 additional jurisdictions via WIPO International Registration data.

The new countries and jurisdictions:

  • North America: Canada, Mexico
  • Europe: the European Union IP Office (EUIPO), France, Germany, Spain, the United Kingdom
  • Oceania: Australia, New Zealand
  • Global: the World Intellectual Property Organization (WIPO)
Thanks to MapChart.net for the great mapping tool.

The new jurisdictions are already integrated into TM TKO’s smart clearance search system, its watching and automated watch Portfolio setup tools, and its groundbreaking ThorCheck® prosecution and dispute research engine.

If you already enjoy using TM TKO, let your local counsel in these jurisdictions know to give us a try! If you have never tried TM TKO, or if you haven’t tried TM TKO lately, we’d be happy to show you all the new features. Email us at inquiries@tmtko.com to set up a time to talk. We have a free 30 day trial, and always have free training and support.

How Does TM TKO’s Smart Clearance Work?

Just enter your client’s mark and core products, and TM TKO will come up with the hundreds of search strategies needed to identify relevant marks and weight them appropriately. Let’s say your client is planning to use the mark UNSTOPPABLE FLAVOR, and wants to clear it in New Zealand and Australia. 

A bar graph will show you how TM TKO weights the component parts — it’s paying much more attention to UNSTOPPABLE than FLAVOR, since flavor is fairly diluted and the term shows up frequently in descriptions of goods.

TM TKO also plots out confusion risks to help you move through your analysis more quickly. More similar marks are plotted up the vertical axis, and more similar goods plotted horizontally. Here, a pair of registrations (shown in the same color to make families of marks stick out more) for UNSTOPPABLE for cereal owned by Kellogg, one in AU and one in NZ, stick out, with a registration for LITTLE BOTTLE OF UNSTOPPABLE for custards owned by Parmalat a bit to its left. Further down to the right, a bunch of marks including FLAVOR for coffee co-exist. Further down the report, you’ll also have a traditional table with full details of the results; this chart just provides a quick visual overview to speed up your review.

Our international expansion also sees us add improved translation options and data, for both the marks you are searching and underlying trademark registry data.

What Is ThorCheck?

ThorCheck is an analytical engine that will find evidence to support arguments for or against likelihood of confusion refusals (for jurisdictions with substantive ex parte examination) and oppositions (everywhere). You can use it in two ways: first, to analyze the strength of your arguments, and second, to generate evidence to support those arguments.

Using ThorCheck for Analysis. The ThorCheck report also gives you analysis about overlap — in addition to these examples of co-existence, how often does a single company own registrations that cover both goods? Here, there are both a number of examples of “intersection” — same mark and owner for both sets of goods — and “dissimilarity,” where different companies have happened to select identical or similar marks. (That count is typically lower because it relies on some chance.) This can help you analyze the strengths and weaknesses of your position.

Let’s say you are EU trademark counsel for a skateboard company. Your application gets opposed by a prior registration for a fairly similar mark for bicycles. ThorCheck can help! Plug in skateboards on one side and bicycles on the other, and you can get a read as to how much evidence there is on either side of the “related goods” question.

As for the evidentiary piece, ThorCheck will find examples of identical or similar marks with different owners, one for skateboards and one for bicycles. This can help you mount a convincing argument that the two sets of goods and services are not so closely related that confusion is likely — demonstrating actual market co-existence can really move the needle.

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
Globe International Nominees Pty Ltd028 skateboardsglobe
Reg: 003201365
Serial: 003201365
Registered
Reg: 12/01/2004
Filed: 07/01/2003
GLOBE
Reg: 000852731
Serial: 000852731
Registered
Reg: 02/06/2001
Filed: 06/09/1998
012 bicycles and tricyclesGlobe motem LLC
Emu Ridge Holdings Pty Ltd028 skateboardsEMU
Reg: 003611787
Serial: 003611787
Registered
Reg: 07/08/2005
Filed: 01/29/2004
EMU
Reg: 013423652
Serial: 013423652
Registered
Reg: 05/20/2015
Filed: 10/31/2014
012 bicycle trailersEmu Electric Bike Company Limited
WaterRower Inc.028 skateboardsSHOCKWAVE
Reg: 011254761
Serial: 011254761
Registered
Reg: 11/10/2013
Filed: 10/10/2012
SHOCKWAVE
Reg: 005208376
Serial: 005208376
Registered
Reg: 06/21/2007
Filed: 07/19/2006
012 bicyclesHalfords Limited
LUCA BRESSAN028 skateboardsSOLO
Reg: 011012598
Serial: 011012598 
Registered
Reg: 05/10/2013
Filed: 07/04/2012
SOLO
Reg: 002999464
Serial: 002999464 
Registered
Reg: 09/10/2004
Filed: 01/08/2003
012 bicycles and bicycles framesIndustries RAD Inc.
DONGGUAN AIXI INDUSTRIES LIMITED028 skateboardsBLITZ
Reg: 011078151
Serial: 011078151
Registered
Reg: 06/13/2013
Filed: 07/27/2012
BLITZ
Reg: 010777431
Serial: 010777431
Registered
Reg: 09/18/2012
Filed: 04/02/2012
012 bicyclesSodibike Comercio De Artigos Esportivos LTDA
Sport-Tiedje GmbH028 skateboardsTAURUS
Reg: 006236889
Serial: 006236889
Registered
Reg: 01/28/2011
Filed: 08/29/2007
Taurus
Reg: 010303758
Serial: 010303758
Registered
Reg: 03/30/2012
Filed: 09/30/2011
012 bicyclesBBF Bike GmbH
Firewire Ltd028 skateboardsFIREWIRE
Reg: 007188022
Serial: 007188022
Registered
Reg: 05/11/2009
Filed: 08/26/2008
FIREWIRE
Reg: 011619293
Serial: 011619293
Registered
Reg: 07/25/2013
Filed: 03/01/2013
012 bicyclesIson Distribution Ltd.
TRIBALIST LTD028 skateboardsRIDGE
Reg: 012944501
Serial: 012944501
Registered
Reg: 09/29/2014
Filed: 06/06/2014
RIDGE
Reg: 008838658
Serial: 008838658
Registered
Reg: 07/27/2010
Filed: 01/27/2010
012 bicyclesHalfords Limited
Representative examples only — there are many more quality examples you’d want to include in a real proceeding.

This evidence can turn the tide in a difficult opposition, by providing you registry-based evidence of the type of co-existence that your counter-party suggests will cause consumer confusion. 

ThorCheck isn’t just for goods/services comparisons! You can also use ThorCheck to find co-existing marks that differ by a single term (i.e. marks that are identical or very similar, except one has STUDIO and one doesn’t), or find registrations with two terms that co-exist (like HAWK and BIRD) in a class.

How Does TM TKO Approach Watching?

All subscriptions to TM TKO include unlimited watching, built on its smart clearance engine. As a TM TKO user, the days of having to sell clients on hard vendor costs to get them to move into a watching regime are over. Protect them and generate valuable work opportunities for you practice!

It is easy to set up a watching portfolio based on your firm name, email address, or a client name or names, depending on what information your “home” country provides. We provide an initial training session to help you get your watching set up to your specifications, and you can reap the rewards.

If You Aren’t a TM TKO User: Try For Free!

TM TKO comes with a free 30-day trial to make sure that our tools match the way you prefer to work. We’re happy to set up a web meeting to walk you through all of the tools and get your watching set up, so you get the full value out of the platform.

If you decide to use TM TKO post-trial, you have two options. First, a $75 daily pass that provides 24 hours of use of anything but watch, for more transactional research projects. Second, a subscription that also provides unlimited watching. Subscriptions are $250/mo or $2500/yr for one seat, and prices increase gradually for additional seats — for example, 5 seats are $500/mo or $5000/yr.

Current TM TKO Users: What Does This Expansion Mean for You?

You get a whole lot more features for exactly the same price tag! We don’t have any jurisdictional gating or other pricing-driven access limitations. If you are a TM TKO user, you now have access to all this new data. 

The easiest way to take advantage of the new international watching features is to set up a new Portfolio or Portfolios for your multinational clients’ key marks. We will have a blog post up shortly to walk you through that process.

Differing Approaches to Protecting Sports Brands Internationally — MLB and the Premier League

This is going to end up a very short post, even if the research ended up taking a while! We decided to compare the extent to which Major League Baseball and the Premier League teams protected their IP, comparing US filings for the Premier League teams and EUIPO filings for the baseball teams.

Baseball had pretty comprehensive filings for key marks in the EUIPO in Classes 25 (clothing merch) and 41 (games / etc.). The top of the Prem’s financial tables had similar coverage, but the bottom — newly promoted or up-and-down teams like Leeds, Burnley, Fulham, West Brom, and Sheffield United — had no US coverage; Aston Villa had a registration in Class 25 but not 41. Even an upper-middle-class team, by both the table and revenues, Everton, had no US filings for its house mark.

What accounts for this difference? It may be due to organizational differences. While MLB teams own their own marks domestically, MLB registers marks on its teams’ behalf internationally. Teams in the Prem appear to on their own — and a less-popular team may view international coverage as a great investment if they just don’t have much of a fan base outside of their local market. Among the US major sports, baseball and hockey are generally thought of as having more local fan bases than the nationally-driven interest in the NBA and NFL, but they haven’t stinted on their European brand protection efforts.